Recent legislative and administrative activities have further changed, and improved on, the implementation of the patent laws under the Leahy-Smith America Invents Act (AIA). First, on January 14, 2013, President Obama signed into law a bill to make technical corrections to certain provisions of the AIA. Second, on January 18, 2013, the US Patent and Trademark Office issued final rules setting fees under the authority granted by Section 10 of the AIA. Among the many changes that stakeholders may find important, both the technical corrections bill and the fee-setting rules make significant changes to the framework for post-grant proceedings.

H.R. 6621 and Eliminating “Dead Zones”

As enacted, the AIA allowed for periods of time during which certain types of patents or claims could not be the subject of petitions for either inter partes review or post-grant review. H.R. 6621 (entitled “An Act To correct and improve certain provisions of the Leahy-Smith America Invents Act and title 35, United States Code”) eliminated these so-called “dead zones” by (1) making 35 U.S.C. § 311(c) inapplicable to patents under the pre-AIA “first-to-invent” regime and (2) amending 35 U.S.C. § 311(c)(1) to remove the bar to filing an inter partes review petition during the nine months following a reissue. Because post-grant review is only available for “first-inventor-to-file” patents, the limitation of section 311(c) preventing inter partes review during the nine months after issuance effectively precluded any petitions for post-grant proceedings on “first-to-invent” patents during this nine-month time period unless they fell within the transitional program for covered business method patents. The limitation of section 311(c)(1) (before amendment by H.R. 6621) preventing inter partes review during the nine months after issuance of a reissue patent prevented any review of surviving claims from the original patent during that period because 35 U.S.C. § 325(f) limits post-grant review on reissue patents to claims added or amended by the reissue proceeding.

In addition to these and a number of clerical amendments, H.R. 6621 also:

Made the date of enactment of H.R. 6621 the effective date for 35 U.S.C. § 298, which makes the failure to obtain advice of counsel inadmissible as a way to show willful infringement or inducing infringement;

Changed the deadline for submitting the inventor’s oath or declaration, substitute statement, or assignment in a patent application from the date of a notice of allowance to the date on which the issue fee is paid;

Clarified the text of 35 U.S.C. § 135(a), which governs filing petitions for derivation proceedings; and

Extended the effect of pre-AIA interference statutes to cover future potential interferences arising from applications for patents under the pre-AIA “first-to-invent” regime.

Fee-Setting Rules and Bifurcated Fees for Post-Grant Proceedings

In its recent rule-making (78 FR 4212), the USPTO made many changes to the patent fee structure. The changes to the fees involved in prosecuting patent applications, filing ex parte reexamination requests, filing supplemental examination requests, and paying maintenance fees, among other fee-related items, may have a significant impact on budget planning for patents in many businesses. And the changes to the fees for inter partes review (IPR), post-grant review (PGR), and covered business method review (CBM) may make the use of these proceedings more attractive to many would-be petitioners. Not only did the USPTO reduce the overall fees for post-grant proceedings by approximately 15 percent, it separated the fees into two stages. The combined fees for the two stages are due on filing the petition. The first fee, about 40 percent of the total, is not refundable. The second fee, however, which accounts for the remainder of the total, may be refunded if the Patent Trial and Appeal Board does not institute a trial on the petition. This fee may also be refunded in part if a fee was paid for claims in excess of fifteen and the Board institutes a trial on less than all claims for which the fee was paid. The details of the prior fees and the newly amended fees are set forth as follows:

Table 1: Post-Grant Fees Effective Before Jan. 18, 2013

Number of Claims in Petition

IPR Filing Fee

PGR/CBM Filing Fee

≤ 20

$27,200

$35,800

Each claim over 20 in petition

$600

$800

Table 2: Post-Grant Fees Effective Jan. 18, 2013

Event

IPR Filing Fee

PGR/CBM Filing Fee

Petition filed

$9,000

$12,000

Each claim over 20 in petition

$200

$250

Trial instituted*

$14,000

$18,000

Each claim over 15 in trial*

$400

$550

* These fees are required at the time a petition is filed but may be refunded if trial is not instituted as to some or all of the claims at issue.

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